Copyright & Trademark Matters

Insights and Developments in Copyright and Trademark Law

It’s a Material IP World: Trademarks, Copyrights, Design Patents and Fabric Designs

Posted in Copyright, Copyright Infringement, Distinctiveness, Fabric Design, Fashion, Fashion, Product Design, Section 2(e) - Functionality, Section 2(f), Trademark, Trademark Infringement

Written by: Susan Neuberger Weller

Fabric design is a creative art form that has existed for thousands of years. Although the methods for creating such designs have evolved, the purpose and function of such designs has not changed as significantly.  Fabric designs are used for purely ornamental and decorative purposes, for purposes of identity, and also to convey information.  From an intellectual property standpoint, how a fabric design is used may dictate what type of protection it can claim. In addition, the time it takes to obtain each type of IP protection, its duration, and the procedures for enforcement may also dictate the type of protection to seek. Continue Reading

Washington Redskins Challenge the Constitutionality of Section 2(a) of the Lanham Act

Posted in Disparaging Marks, Section 2(a), Trademark, Trademark Prosecution, Trademark Trial and Appeal Board

Written by: Susan Neuberger Weller

The Washington Redskins trademark controversy is far from over. Despite the fact that certain news and sports commentators and mainstream newspapers and organizations have announced that they will no longer use the term “Redskins” when reporting on the National League football team, and the fact that a variety of public figures, including President Obama, have expressed an opinion that the name should be changed, team owner Dan Snyder continues to steadfastly defend the name as expressing only “honor and respect” and state that he has no intention of ever changing it. In support of that promise, the team has appealed the cancellation of its US trademark registrations by the US Trademark Trial and Appeal Board which held in a split 2-1 decision that the REDSKINS trademark was disparaging to Native Americans and, therefore, no longer eligible for continued registration. Continue Reading

Copyright Ownership is not Monkey Business: Wikimedia and Slater Fight Over Selfie Photographs

Posted in Uncategorized

Written by: Susan Neuberger Weller

A simmering dispute about ownership of a copyright in photographs has now garnered international attention. As more fully reported in an article in the British newspaper The Telegraph, British photographer David Slater has stated that he intends to bring a copyright infringement suit in the U.S. against Wikimedia, the nonprofit entity behind Wikipedia, focused on photographs taken by a crested black macaque monkey in Indonesia in 2011. Slater had been in Indonesia on a photo shoot when his camera was grabbed by a monkey which then took some amazingly good selfies with Slater’s camera. Some of these photographs can be seen on  Slater’s website, the Wikimedia website, and in The Telegraph article. Slater claims to own the copyright in the photos because he owned the camera with which they were taken. Wikimedia claims that the photographs are not protected by copyright and are in the public domain since they were taken by a monkey, and not a human. Accordingly, it has refused Slater’s requests to remove the photographs from the Wikimedia site. Continue Reading

Tesla Successfully Resolves Chinese Trademark Dispute

Posted in Foreign Filing, Trademark, Trademark Infringement

Further to our recent Tesla Motors post, Bloomberg and BNA report  that Tesla has resolved its trademark dispute with Zhan Baosheng, the individual who registered the TESLA marks in China. Chinese authorities will cancel the existing TESLA Chinese trademark registrations and all web site names registered by Mr. Zahn in China will be transferred to Tesla.  Needless to say, Tesla appears very pleased with this outcome and has stated that it will continue to move forward with growing its business in China.

Court to Sen. Hershey: Tear Down Those Signs

Posted in Color, Section 43(a), Trademark, Trademark Infringement, Uncategorized

An update to our prior post on the trials and tribulations of Maryland State Sen. Steve Hershey in his trademark battle with The Hershey Company can be found in an article I wrote for LAW360, which is accessible here. As always, we will post any updates to this case as they develop.

And Speaking of Foreign Trademark Filing Strategy: Tesla Motors is Sued in China for Trademark Infringement

Posted in Foreign Filing, Trademark, Trademark Infringement

Written by Susan Neuberger Weller

Further to our recent post about the worldwide trademark trials and tribulations of Anheuser-Busch and its BUDWEISER trademark, we now  report that the up-and-coming electric car manufacturer Tesla Motors Inc. has been sued in China for trademark infringement by a Chinese businessman who registered the rights to the TESLA mark in China before the US carmaker entered the Chinese market. As reported by Bloomberg , the owner of the Chinese registration, Zhan Baosheng, claims that his rights are being violated by all vehicle sales by Tesla in China and that he is seeking the shutdown of all Tesla showrooms, service centers, and supercharging facilities, the termination of all sales and marketing activities by Tesla in China, and the payment of $3.9 million in compensation for the allegedly infringing activity.  Although Tesla successfully challenged the validity of the existing Chinese TESLA registration, that 2013 ruling by SAIC’s Trademark Review and Adjudication Board is currently being appealed by Zhan Baosheng.

As  advised in our BUDWEISER post, it is important to develop and implement an international trademark filing strategy well in advance of actually entering foreign markets.  This is because trademark rights in most countries are granted to the first to register  a mark without the need to prove use.  Although there may be grounds to challenge foreign registrations obtained by “enterprising entrepreneurs,” this process can be lengthy and expensive and there is no certainty as to its outcome.  Certainly, the cost to file trademark applications  during the early stages of a company’s international expansion plans  will be far less than the cost for an attempted recoupment of rights.

So, start early, plan strategically, and move expeditiously to avoid the usurping of your trademark rights in other countries.

 

Trademark Rights around the World: It May Be BUDWEISER® in the US, But Not Everywhere

Posted in Foreign Filing, International Rights, Trademark

Written by: Susan Neuberger Weller

 

Anheuser-Busch, the venerable American beer brewer, and Budejovicky Budvar NP, a Czech beer brewer, have been fighting since the 19th century over rights around the world to the BUDWEISER trademark. A Czech town called Ceske Budejovice is the original source of this dispute. That town is known in German as “Budweis” and both Anheuser and Budvar started brewing beers years ago using this German name as their inspiration.  Last week, a Portuguese appellate court upheld the national trademark office’s refusal to allow Anheuser-Bush to register BUDWEISER in that country since the Czech company had registered there first. This is not an isolated circumstance involving the BUDWEISER mark. Elsewhere in the European Union, including Germany and Austria, Anheuser cannot use the BUDWEISER mark, but can only distribute its beers under the mark BUD or some other mark. The Czech beer cannot be sold under the BUDWEISER name in the US or Canada, and is sold in these countries under the mark CZECHVAR. How could this happen?

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U.S. Supreme Court Decides Aereo Internet Broadcast Television Case

Posted in Copyright, Copyright Infringement, Public Display, Public Performance

Written by:  Joseph M. Dicioccio

Yesterday, the U.S. Supreme Court released its widely-anticipated decision in American Broadcasting Cos., Inc. et al. v. Aereo, Inc., wherein it reversed and remanded for further consideration a decision by the U.S. Court of Appeals for the Second Circuit that held that Aereo’s “watch” feature was not a “public performance” under copyright law, and thus did not directly infringe upon the public performance rights of the owners of that content, namely certain broadcast networks.  In reversing the 2013 Second Circuit decision, the Supreme Court noted that because the revisions to the Copyright Act in 1976 were, in the majority’s opinion, largely directed toward rejecting certain U.S. Supreme Court decisions that had held that services that “enhanced” a viewers’ ability to receive broadcast television signals (through cables connecting giant antennae with viewers television sets) were not “public performances,” those services did not run afoul of the copyright law prior to its 1976 revisions.  The majority, led by Justice Breyer held that the Copyright Act was then revised to reject the import of these decisions, thus setting the stage for the Court’s present decision.

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Let’s Set the Record Straight….the Redskins Still Own the REDSKINS Trademarks

Posted in Counterfeits, Disparaging Marks, Section 2(a), Trademark, Trademark Infringement, Trademark Trial and Appeal Board

Written by: Susan Neuberger Weller

The overwhelming public reaction to the US Trademark Trial and Appeal Board’s June 18 decision canceling six REDSKINS trademark registrations on grounds that the mark disparaged Native Americans has been impressive. However, news articles, op-ed pieces, informal commentary, and anecdotal stories all evidence wide range confusion about and a misunderstanding of the meaning and impact of the decision.  This is an effort to set the record straight on the legal effect of this decision.

  1. The Washington Redskins still own valid and enforceable federal trademark rights in the REDSKINS marks. The federal registrations will not be formally canceled until all appeals have been exhausted, which will take years given the fact that the Redskins have indicated an intent to appeal the decision.
  2. Unlike most other countries in the world, US trademark law recognizes fully valid and enforceable trademark rights at common-law in trademarks that are being used but which are not registered. Thus, even if the registrations are eventually canceled, the Redskins will continue to own common-law rights in the trademarks which can be fully enforced in state and federal courts against third-party infringers.
  3. While the trademarks are still registered, the federal trademark registration notice ® may be used in connection with the REDSKINS marks. If these registrations are eventually canceled at the end of the legal process, the team can continue to use the REDSKINS marks and can use the unregistered trademark notice ™ with the marks.
  4. Anyone who thinks the Washington REDSKINS trademark is now up for grabs and can be used without incident is sorely mistaken, and anyone who has already begun to make unauthorized use of any of the REDSKINS marks is just asking for trouble. Should it choose to do so, the Redskins can still bring suit for infringement throughout the country.
  5. This decision is not based on a new law or any new Federal Government action, power, position, or initiative. The Section of the Trademark Act upon which the Trademark Trial and Appeal Board based its decision has been in existence and has been applied since 1946. The  US Trademark Office, the Board, and courts around the country have regularly and for years refused to register trademarks and have canceled existing trademark registrations which were determined to be immoral, deceptive, scandalous, disparaging, or which brought persons, living or dead, into contempt or disrepute. The list of such marks is quite lengthy.
  6. Moreover, this is not a new case. These disparagement claims have been around for decades. This the second time that the Board has canceled these REDSKINS registrations on grounds of being disparaging to Native Americans. The first case, which was initially brought in 1992 and which was not litigated to a conclusion until 2010, was finally dismissed on grounds that had nothing to do with the disparagement issue. Rather, the case was dismissed on grounds of laches, which means that the specific Native Americans who filed the first case waited too long to do so and that delay prevented the case from moving forward.
  7. Until the registrations are formally canceled, which will be years from now if appeals are pursued, the REDSKINS trademark registrations will continue to be recorded with US Customs. This means that any unauthorized merchandise bearing a REDSKINS trademark which attempts to enter the country is still subject to seizure at the border by US Customs.

So, the Washington Redskins’ trademark rights are not dead and the REDSKINS trademark saga is far from over. Stay tuned.

“REDSKINS” US Trademark Registrations are Canceled for Disparaging Native Americans

Posted in Disparaging Marks, Section 2(a), Trademark, Trademark Trial and Appeal Board

Written By: Susan Neuberger Weller

A three-judge panel of the US Trademark Trial and Appeal Board (TTAB), for the second time and in a 2-1 decision, has held that the REDSKINS trademark used in connection with professional football and related services by the Washington Redskins National Football League team was disparaging to a substantial composite of Native Americans between 1967-1990, the time during which the registrations issued. It also held that the defense of laches did not apply to a disparagement claim where the disparagement pertains to a group of which the individual plaintiff or plaintiffs comprise one or more members. Accordingly, it ordered the registrations at issue canceled as violations of Section 2(a) of the Trademark Act. The cancellation of the registrations has no effect on the team’s ability to continue to use the REDSKINS marks.

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